Interview: Europe's new patent chief

SAN JOSE, Calif. – The new head of the European Patent Office wants to harmonize today's separate intellectual property systems—and he's starting at home. Benoît Battistelli says one of his goals is to create a single European patent and patent law system.

The EPO represents all 27 EU countries and 11 other nations. However, each country has a separate process for validating patents in its own language and litigating them in its own courts.

"We are in a very strange situation where we have had EU patents for more than 70 years, but the same patent can be judged differently by different national courts," said Battistelli in a meeting with press during a visit to the U.S.

Proponents of harmonization have proposed a new pan-European patent court and a single patent accepted by all EPO members but issued in English or a limited set of languages. It's not clear how the proposal will fare, especially on the single-patent concept.

"Language is the one sticking point [and it] is a sensitive issue because the EU is based on all languages having equal value," Battistelli said. "But it's too costly to grant patents in all our languages, so we need to support limited languages to be practical," he said.

Some have proposed issuing patents in English but providing machine translation to other languages. "We think now the technology is available," he said.

Even if the new proposal gains support it would only cover the 27 EU countries. The 11 other members of the EPO would still need to validate and litigate EPO patents in their own languages and courts.

At the global level, patent offices are taking small steps toward harmonization, said Battistelli who was in the U.S. for meetings with the heads of the U.S. and Japan patent offices.

The three countries agreed on a common classification scheme in October based on the EPO system which is also used in China. World patent offices agree they want to streamline efforts by sharing more of their work, but that requires agreement on many more common procedures.

The U.S. patent office has promoted a Patent Prosecution Highway for such shared efforts. But so far pilot projects under the program have not gained much interest from applicants in Europe, he said.

Battistelli ranked as a relatively low priority work on reducing the backlog of patent applications. The EPO gives all applicants a first action within six months and grants patent on average within 43 months. It has a free fast-path system that so far has been requested by no more than seven percent of applicants.

"We do understand the need to get patents quickly, so we put emphasis on a first action that gives the applicant a sense of whether there is use to continue or not," he said. "Our objective [for final approvals] is to get to 36 months on average," he said.

About a quarter of the submissions to the EPO come from the U.S. The office gets about 220,000 applications a year.

After an eight percent decline in 2009 due to the recession, applications are now up about five percent over last year and are projected to be back at 2008 levels in 2011.

A major problem with the European patent system, compared with the U.S., is that the right to patent is lost immediately, if an invention is publicly disclosed prior to the filing of the patent application. The U.S., on the other hand, provides a grace period of one year in which to have the patent application on-file. This one year grace period is of enormous benefit to the electronics and computer industries, where it is often very difficult to keep an invention from public disclosure while pursuing the development of products or services. The lack of a grace period for Europe is less of a problem for other industries, like biotech or pharmaceuticals, where products are often developed, anyway, through longterm secretive efforts.

Your points are quite good. I think the reason for the differences in priorities is that the U.S. patent system, for all its failings, is still well-ahead of the EPO's situation. The U.S. patent still has, by far, the best cost/benefit ratio. Just one U.S. patent covers an economy of roughly the same size as the EU with its 27 primary members. Once you obtain the patent, the U.S. provides a court system, unified under the special patent appeals court of the Federal Circuit, that can really enforce it. Since the U.S. has the basics covered, it can afford to focus on secondary effects, like backlog. The EPO, on the other hand, still has to address the basic issue of a unified system.

It is interesting that with all the talk about patent law reform in the United States, none of the major concerns facing the European Patent Office (multiple languages, multiple jurisdictions, multiple classifications) apply to the US. One hot topic of discussion here (reducing the backlog of patent applications) is ranked as a relatively low priority by Battistelli and the other (patentability) wasn't mentioned.
My experience with US patents suggests that first actions often take 2 years. Average time to issue (for my 32 patents) is 43 months. The article says the EPO gives all applicants a first action within six months, typically grants patents within 43 months, and has a free fast-path system (only requested by 7% of applicants).
Perhaps the real issue with patent backlog is the time to first action.